Monday 10 August 2015

Are we UPP to speed on on Unified Patent Strategy

Patent applications filed at the EPO today could emerge on grant as Unitary Patents or European
High Tech Lemon Squeezing
Patents of Unitary Effect - abbreviated to UPP (which really stands for Unitary Patent Protection). So far most of the news on this exciting topic has concentrated on the preparations for the Unified Patent Court (UPC) and its procedure. UPC even has its own website and its news machine is very exciting and efficient. The date it all goes live could be in 2016.

My latest copy of the CIPA Journal -available to members using Safari or Internet Explorer here contains at page 59 an interesting article by Ellie Purnell reporting on the Manchester meeting which  encouraged us all to keep up-to-date. (If you read it you will understand what I mean when I say "I am squeezing her lemons").

We even know what the renewal fees of the UPP will be when one is eventually granted as this was agreed back in June. They are really very interesting. If you could get an UPP granted quickly you could save a bundle on awful EPO renewal fees on pending applications. Not until the 12th year does a UPP cost more to maintain than an application languishing before the EPO. This is a serious wake-up call to patent attorneys: we need to get patents granted or abandoned. I like their thinking.

Now I expect that all the big firms have been brainstorming their strategies for their clients and are able to advise on whether EPO applications or national applications are the right route on each individual case. However, solos might be a little bit less well positioned for brainstorming so I thought I'd look and see what resources were available to help clients and solo strategists.

The EPO has some useful FAQ here but they are not in the business of offering strategic advice.

The companies filing their priority applications now, the UPP is something they need to take into account, especially if they think they might want national patents rather than put all their eggs in one basket at the unitary patent court. Judging by the is the concern amongst big business for opting out their classical European patents and their distress about the possibility of paying €80 for each opted out patent family, we must expect that industrial patent departments are well abreast of the issues, so are they abandoning the EPO in droves?

The real decision time if you are on the EPO route is after grant. At that stage you have to choose whether to go for a UPP (patent with unitary effect) or national patents or a combination. Combination is necessary because the UPP does not cover all EPO states and will never do so since some of them like Switzerland are outside the European Union. Therefore, you may think it's safe to carry on with the standard PCT EPO route, but is it? If the EPO is going to stall applications with an adverse search report, sticking with the EPO could be an expensive option. Maybe long pendencies are quite attractive to an applicant and therefore choosing our now under-resourced national patent offices for examination might be an interesting option for keeping hopeless patent hopes alive and your competitors wondering.

What do you think. Please draw attention to any relevant articles?


  1. Interesting points, thanks Barbara.
    Still puzzling over how to advise clients.
    The UPP for 25 (is it still 25?) states seems like a big incentive to clients, even if that means traversing the EPO path, which is increasingly less attractive for lots of reasons (cost, time, quality, social).
    And I agree getting grant quickly and converting to UPP seems far more cost effective. Just that little nugget of getting grant quickly through the EPO treacle.

    1. Hi Pseudonimouse
      Is suspect UPP will open with 13 as that is the threshold but as the 13 must include UK France and Germany it should be a worthy band.
      I think the EPO treacle is not uniform and just as patents agents have files they dont like, even more so do examiners. Our job is to make our files so attractive they fly and improve the mood of the EPO examiner to be brave enough to pick on some treacly specimens

  2. We know that the law applying to European Patents having Unitary Effect (EPUEs) could well differ from the law applying to other forms of patent protection in Europe. Whether or not it will be beneficial for an applicant to pursue unitary protection (or to opt out) will depend upon precisely how the applicable laws will differ.

    But how can you advise upon which option to take when it is still far from clear precisely which law(s) will be applied to Unitary Patents (or to opted-out EPs, to not opted-out EPs or, in view of Article 64(1) EPC, to national patents)?

    If it were just a question of relative costs, then the equation would be pretty simple. But it is much more complicated than that - especially when it comes to the rights conferred by a granted patent and the exemptions from infringement that apply.

    Of course, the EPO will not care one jot about all this uncertainty, as it affects post-grant matters and so is beyond their remit. National legislators do not appear to have woken up to the problem either, and seem to be adopting a "head in the sand", minimalist approach to amending national patent laws.

    This effectively leaves the judiciary as the only option for obtaining clarity on the applicable laws - and therefore makes your job in advising your client a task of second-guessing how, many years from now, judges of the UPC (or of a national court) will interpret the UPC Agreement and/or any one of the national laws of the States which ratify that Agreement. Good luck with that!